Trademark Application Timeline: When to File, and How to Evaluate Costs of In-Use vs. Intent-to-Use Applications

One of the most consequential decisions in a trademark filing happens before a single USPTO form is submitted: choosing whether to file based on current use of the mark, an In-Use application, or based on a good-faith intent to use the mark, an Intent-to-Use (ITU) application. This choice affects the trademark application timeline, the number of USPTO filings required, and the total cost of reaching registration. Before any of these timing questions arise, it is worth confirming the mark itself is likely to clear the USPTO database; our overview of what AI can and cannot tell you before filing a trademark covers that earlier step.

What Is a Trademark Application Timeline?

The USPTO requires evidence of use of a trademark before granting federal registration. When a company is using a trademark on goods or services, the application may be filed as “in use,” with evidence of use submitted up front. When a company is not yet using a trademark, it still has the option to file an “intent to use” application. A common example is a skin care company developing product formulas before launch; filing an ITU application allows USPTO review of the proposed trademark before the company has to invest in expensive packaging. 

Both an “in use” and ITU filing start the same way but diverge significantly after examination.

How Long Does Trademark Registration Take?

Some months after filing, a USPTO examining attorney reviews the application and may issue an office communication. If the review finds no conflicting marks, the application proceeds to publication, and if there is no opposition, it moves forward again. Up to this point, an In-Use application and an ITU application follow the same timeline.

How long this initial phase takes varies depending on the USPTO’s current workload, and it is not unusual for the first office communication to arrive several months after filing. Businesses planning around a product launch or rebrand should build this initial review period into their planning from the outset, rather than assuming the application will clear examination quickly simply because the mark seems clearly available.

Filing a Trademark Application Based on Current Use (Section 1(a))

When the application is reviewed, the examining attorney reviews the evidence of use as part of the process and issues an office communication with the results. If the application looks good, it moves to publication. If there in no opposition the application proceeds directly to registration. No additional filings are required.

Filing an Intent-to-Use Trademark Application (Section 1(b))

This process is similar to an application filed as “in use”. However, because there is no use yet, there is no evidence of use for the examining attorney to review at this stage. The examining attorney reviews the application for likelihood of confusion and other issues, with no decision made on evidence of use. If the review is successful, the application moves on to publication. And, if there is no opposition, the application proceeds to a Notice of Allowance, not straight to registration.

In-Use vs. Intent-to-Use: Key Timeline Differences

After publication, and assuming there is no opposition, this is where the paths diverge. If the application was filed as “in use,” the USPTO issues a registration at this point, with no more USPTO filing fees needed. If the application was filed as ITU, it instead receives a Notice of Allowance (NOA). An NOA is not registration; it means the USPTO has “allowed” the application, and the applicant still must show use of the trademark before the USPTO will issue a registration.

In-Use vs. Intent-to-Use: When to Choose One or the Other

Sometimes a company is not yet using a mark but will begin using it within a few months. In this scenario, it sometimes makes sense to wait and file as “in use”  to save the additional USPTO filing fees, and to save time in the overall trademark process. Other times it makes sense to file as ITU; the costs and filing requirements involved are factors in deciding which way to proceed.

USPTO Review and Examination Process

Regardless of filing basis, the examining attorney’s review covers likelihood of confusion and other statutory requirements, plus, for Section 1(a) applications, the submitted evidence of use. Proper preparation before filing, including accurate goods and services and adequate evidence of use, matters as much as the strength of the mark itself.

ITU Application – What Happens After a Notice of Allowance (NOA)?

The USPTO has a procedure for showing use of the trademark after an NOA. The applicant has six months after the date of the NOA to file a statement of use (SOU). If the applicant cannot file within six months, the USPTO allows extension requests for additional six-month periods. The extension request must be submitted every six months to keep the application alive.  

When an SOU is filed, it is best to also file an extension request at the same time, even if the SOU is filed one day after the NOA. This is considered an “insurance” extension request. As of the time of writing this blog, the USPTO is consistently taking more than six months to review an SOU. This means the examining attorney likely will not review the SOU before the next six-month extension deadline rolls around. 

If the applicant files an SOU and did not file an extension request, the applicant runs the risk that the SOU will be rejected. If this happens, the applicant will only be able to submit additional evidence that was in existence before the end of the six-month period when the SOU was filed. In other words, the applicant will only be able to submit evidence that was in existence in the past. 

If an extension request was filed, the applicant may be able to create and submit new evidence addressing the examiner’s concerns. The applicant may redo packaging, or revise its website to create adequate evidence of use. 

If an extension request was not filed, the only evidence that can be submitted is evidence that was in existence at the end of the original six-month period; the applicant cannot create new evidence. Often there is no existing evidence that will address the reasons for rejection, and the application is abandoned. This is why the extension request is called an “insurance” request.

Additional Filing Requirements and Costs for Intent-to-Use Applications

The applicant can request up to five extension requests and must file an SOU within 36 months after the date of the NOA. The USPTO will not accept an SOU filed later than that. Each extension request requires its own USPTO filing and filing fee, and these expenses can add up over the life of an ITU application that takes longer than six months to reach actual use. Several of these scenarios are addressed in more detail on our frequently asked trademark questions page.

Common Mistakes That Delay or Jeopardize Trademark Registration

• Filing too early, before a genuine good-faith intent to use exists, or too late, after competitors may have established rights. 
• Selecting the wrong filing basis, such as filing as “in use” without adequate evidence, or as ITU when the business was already using the mark. 
• Incomplete evidence of use, where specimens do not adequately demonstrate use in commerce. 
• Missing USPTO deadlines, particularly the six-month SOU window after an NOA. 
• Failing to plan realistically for when the business will actually be able to demonstrate use.

A related mistake is treating the extension requests as automatic or routine rather than as deadlines in their own right. Because up to five extensions are available over a 36-month window, it is easy for a business to assume there is always more time available. Each extension still has its own filing deadline and its own fee, and missing even one of those deadlines, after assuming the next extension would simply be filed later, can result in the same abandonment outcome as missing the original six-month SOU deadline.

When Should a Business Consult a Trademark Attorney?

If you are unsure whether an In-Use or Intent-to-Use application is appropriate for your business, Adams Law Office can help you evaluate the filing strategy, timing, and requirements. Evaluating timing and costs before filing, rather than after an NOA deadline is already approaching, gives a business far more flexibility. Adams Law Office can help; contact Adams Law Office to discuss your specific timeline.

Frequently Asked Questions

What is the difference between an In-Use and an Intent-to-Use trademark application?

An In-Use application, filed under Section 1(a), requires that the trademark already be in use, with evidence submitted up front. An Intent-to-Use application, under Section 1(b), is based on a good-faith intent to use the mark and does not require evidence of use until later.

How long does a trademark application take to register?

Both filing bases follow a similar initial path through examination and publication. An In-Use application can proceed directly to registration after that, while an ITU application requires an additional Statement of Use step that can extend the timeline by months or years.

What happens after a Notice of Allowance?

An NOA means the USPTO has allowed an ITU application to move forward, but it is not a registration. The applicant must file a Statement of Use within six months of the NOA, or request an extension, before registration will issue.

How long do I have to file a Statement of Use after a Notice of Allowance?

Six months from the date of the NOA. The applicant can request six-month extensions, up to five extensions total, provided the SOU is filed within 36 months of the NOA.

How many extensions are available for filing a Statement of Use?

Up to five extension requests, as long as the SOU is filed within 36 months of the NOA date. Each extension requires a separate USPTO filing and fee.

Why should I file an extension request along with my Statement of Use?

It preserves the ability to submit additional evidence if the examining attorney refuses the evidence initially submitted. Without it, only evidence that existed by the end of the original six-month period can be submitted.

Is an Intent-to-Use application more expensive than an In-Use application?

It generally is because it requires an additional filing and USPTO filing fee.  An In-Use application reaches registration without additional filings, while an ITU application can require several extension filings and fees over as long as three years.

What is the difference between Section 1(a) and Section 1(b) applications?

Section 1(a) is based on current use and requires evidence of use at filing. Section 1(b) is based on a good-faith intent to use the mark, with evidence submitted later through a Statement of Use.

What happens if I miss the deadline to file a Statement of Use?

The application can be abandoned, meaning the USPTO will not issue a registration based on that application. It’s possible to file a petition to revive an abandoned application, the the petition to revive is timely filed. 

When should a business decide between filing In-Use or Intent-to-Use?

Before filing, based on whether the business is already using the mark, how soon it expects to begin use if not, and how the resulting timeline and extension costs fit the business’s plans.

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